Going banana over a Banana Design
After exchanging a couple of cease & desist letters with each other, The Velvet Underground (“VM”), a rock band sued The Andy Warhol Foundation for the Visual Arts (“Warhol Foundation”) over a banana image designed by artist Andy Warhol for VM’s debut album, “The Velvet Underground & Nico (the “Banana Design”).
In its Second Amended Complaint, VM asserts that the Warhol Foundation violated its copyright when the Foundation licensed the Banana Design to third parties without their consent and they also infringed their trademark in relation to the Banana Design.
U.S. District Court Judge Alison Nathan dismissed the copyright portion of the case because the covenant not to sue for copyright infringement for VU’s use of the Banana Design eliminated the actual controversy between both parties, and therefore there is no cause of action.
However, the trademark portion stays on. VU argues that the Banana Design is inherently distinctive and has long-established secondary meaning associated with VM and it “has become so identified with the Velvet Underground… that members of the public, particularly those who listen to rock music, immediately recognize the Banana [D]esign as the symbol of the Velvet Underground.”
Warhol Foundation says VM cannot claim a trademark for its ongoing business because it broke up as a band in 1972 and its last performance live was in 1993.
What’s your verdict?